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Booking.com – Book ‘em? Maybe…..or leave a Booking Mark

Malcolm Campbell ||

On Monday May 4, 2020 via a teleconference, the United States Supreme Court heard oral arguments in the United States Patent and Trademark Office (USPTO) v. Booking.com B.V., Docket No. 19-46. This was the first oral argument heard and presented to the court since they closed their “doors” in March as a response to COVID-19. This opinion is the first of the Court on generic marks since it decided that the term “shredded wheat” was generic in 1938.

This case raises the “genericness doctrine” in the context of a domain. The respondent in this case, namely, Booking.com operates a website which primarily allows consumers to book hotels and travel related accommodations. The application for the mark booking.com was refused by the USPTO since they found it to be generic and therefore, barred by the Lanham Act.

The essence of this case is whether adding the .com extension will serve as enough to overcome a generic obstacle for registration.

During the arguments, Justice Thomas’ questions were based on the precedent of the 130-year old case of Goodyear Rubber Manufacturing Co. The Supreme Court held in the Goodyear case that the mere addition of “Company” or “Inc.” to a generic term does not serve to create a protectable trademark. Furthermore, the USPTO noted that Goodyear created a per se rule that marks which are proposed and that consist merely of generic terms that are not protectable. If there is an “individualized” element which is claimed by an applicant such as “.com” or “1-800,” it may prove doubtful as if the established (albeit old) Goodyear rule should apply. Some of the other justices cast doubt on whether the Goodyear holding was sustainable in the internet age. As well, there is also the question as to whether that case had been abolished by the Lanham Act’s “primary significance” test from the 1940s. There were other discussions amongst the justices about Goodyear being pre-internet and of a different time in the world, and they also had questions for Booking.com on their suggestion that the “primary significance” test should apply in genericness determinations. However, the question still remains as to how that would be applied during an examination.

The primary and key concern of the USPTO was the anti-competitive monopolisation of domain name endings, barring analogous marks that someone who competes with the particular applicant can use. This was a concern many of the justices shared and had apprehensions about. Based upon these concerns, Booking.com heavily relied on using examples of combinations of words that were generic to establish that two similar generic combinations would not cause a likelihood of confusion at the consumer level. They gave an example that “weather.com” and “accuweather.com” do not cause consumer confusion. So, given that position, basically one can infer that Booking.com conceded that its mark (and similar marks) might be so weak that an enforcement based on a registration would only apply for identical (or nearly identical) marks. Moreover, the bottom line here is that it raises the question of whether marks in this category need to be registered with the USPTO in any capacity.

Based upon the court’s line of questioning in distinguishing Goodyear, they may lean in favour of Booking.com, or perhaps at a minimum, reject the USPTO’s proposed bright-line rule against generic “.com” marks.

But, that balance remains to be seen. For now, due to COVID-19, it appears that no one is booking anything other than their next Zoom call!

This international perspective was provided by Relani Belous of Belous Law, Los Angeles, USA. Relani has an extensive commercial practice and takes an extremely business minded approach to legal services. She works with businesses large and small and is a great connector for business in LA having built a large network through previous roles including at Stan Lee’s POW! Entertainment and MGM Studios.

If you have a query relating to this particular matter, or you would like to speak with an expert in Coleman Greig’s Intellectual Property team, please do not hesitate to get in touch today.

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